Lindt recently failed in its attempt to stop a competitor,
Riegelen, from selling Easter confectionery that looks remarkably
similar to Lindt's famous chocolate bunny. Lindt relied on the
fact that it has a German trade mark registration for a
sitting bunny wrapped in gold foil and featuring a red ribbon and a
bell, but the court held that bunnies are old hat - especially come
Easter-time - and that there was therefore no likelihood of
Shape trade marks, aka 3-D trade marks, are problematic. Although
the shape of a product can clearly be registered as a trade mark
– the definition of a 'mark' in the Trade Marks Act
includes 'shape' – the fact is that it's very
hard to register product shapes as trade marks. For
starters, the law says that a shape can't be registered if
it's functional - an application to register the Lego block
failed because it was deemed to be functional. And the courts seem
to apply a stricter test for shapes (and indeed other
unconventional marks) than they do for word marks (they deny this,
but they do). The courts say that not only must you show that the
shape has become distinctive, but you also need to show that the
shape 'departs significantly from the norms or customs of the
industry'. The reason for this is that the courts feel
that consumers don't normally regard things like product shape
as an indicator of commercial origin, and that they will only do so
if the shape is highly unusual. On top of that, I suspect, there is
a lingering feeling that product shapes should be registered as
designs rather than trade marks – a product shape can be
registered as a design, and novelty rather than distinctiveness
will be the criteria.
Lindt also failed in its attempt to get its bunny registered as a
Community (EU) Trade Mark last year, despite the fact that it
already had national registrations in a number of EU countries like
Germany and Austria. It joined a long list of failures.
Although some applications get through - like the shape of the Mini
Cooper- the majority fail, with the Bounty chocolate bar shape
being a pertinent example. I suspect that for a confectionery
shape mark to succeed it will have to be truly unusual, like the
Toblerone triangular shape (which I think is registered).
So, what about South Africa? There's not much legal authority
here, but a few years back the Supreme Court of Appeal did turn
down an application to register the shape of the Grunberger bottle
for wine. So there are difficulties here too!
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